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Biography

Kirsten Johnson has expertise in a wide range of technologies, advising companies of all sizes from start-ups to multinational corporations on maximizing the value of their intellectual property. Kirsten has drafted and prosecuted hundreds of U.S. and international (PCT) patent applications, and coordinated with patent firms across the globe to obtain worldwide patent protection. She works with innovators to develop forward-looking strategies in line with their business objectives, employing patentability assessments, expedited prosecution strategies, and freedom-to-operate and due diligence analyses.

Kirsten’s expertise extends to diverse areas of innovation including chemical formulations, chemical and biochemical detection, pharmaceuticals, renewable energy, semiconductors, materials synthesis and characterization, cardiovascular prostheses, drug delivery systems, vaporizing devices, food products, health supplements, and personal care. In energy, she has worked with companies in a wide array of renewable technologies including fuel cells, solar cells, hydrogen, and biofuels. In biotechnology, she has experience in nucleic acid and small molecule detection for a variety of diagnostic and medical treatment applications. She has contributed to The Rose Sheet, a prominent publication in the cosmetics/fragrances/skincare industries, and IP Law360, a leading news source in the IP law community.

While earning her Ph.D. under the direction of Professor Mario J. Molina (1995 Nobel Laureate in Chemistry), Kirsten gained considerable hands-on experience in chemical kinetics, flow dynamics, aerosols, mass spectrometry, UV-Vis and X-ray spectroscopy, electron microscopy, and experimental design and optimization, including field work in Mexico City. She also has lab experience in high-pressure organometallic synthesis towards development of an HIV protease inhibitor, sol-gel production of nanoporous materials for bioremediation, and electrochemical research while studying abroad in Nantes, France.

Before joining Bookoff McAndrews, Kirsten was a technical specialist/patent agent at Finnegan while attending law school. During that time, she focused on prosecution and strategic portfolio management in pharmaceuticals and chemical formulations.

Highlights

  • Successfully obtained patent term extension (PTE) for innovative diagnostic agent on behalf of university and pharmaceutical company.
  • Currently managing prosecution of foundational gene-editing technology.
  • Provides patent counseling for clean energy start-up to protect new consumer devices and leverage IP relative to competitors, including filing of inter partes review (IPR).
  • Employs strategic use of utility, design, and utility model patent applications for comprehensive patent protection, including international PCT and international (Hague) design applications.
  • Expanded patent portfolio of medical device start-up to more than a dozen patent families over two-year period and advised on patent matters as part of successful IPO filing.
  • Served as in-house IP counsel during secondment at multinational chemical company.
  • Articles editor, George Washington Journal of Energy and Environmental Law.

Bar Admissions

  • District of Columbia
  • Massachusetts
  • U.S. Patent and Trademark Office

Education

  • The George Washington University Law School, J.D., 2012
  • Massachusetts Institute of Technology, Ph.D., Physical Chemistry, 2008
  • University of Idaho, B.S., Chemistry, summa cum laude, 2002
  • University of Idaho, B.A., French, summa cum laude, 2002

Professional Recognition

  • Recognized by Managing Intellectual Property as a “Rising Star” (United States) for patent prosecution, 2019.
  • Recognized by IAM Patent 1000 as a “Leading Patent Professional” for Patent Prosecution, 2019.

Publications

  • Author. “USPTO Seeking Input on Written Description Guidelines for Design Applications,” BoMc Blog, April 28, 2016.
  • Author. “Consider Design Patents to Strengthen Your IP Portfolio,” BoMc Blog, April 21, 2015.
  • Coauthor. “Extending a Patent’s Term to Protect Your Market Share,” The Gray Sheet, January 1, 2015
  • Coauthor. “How Patent Procedures Will Change Under Patent Law Treaty,” Law360, November 15, 2013.
  • Coauthor. “Putting U.S. Patent Reform to Work: The America Invents Act in Practice,” The Rose Sheet, August 5, 2013.
  • Coauthor. “5 Things a Medical Device Company Can Do to Maximize its Competitive Patent Position,” MedicalDeviceSummit.com, March 13, 2013.
  • Coauthor, Comparative Analysis of Urban Atmospheric Aerosol by Particle-Induced X-ray Emission (PIXE), Proton Elastic Scattering Analysis (PESA), and Aerosol Mass Spectrometry (AMS), Environmental Science & Technology 42, 6619-6624, 2008.
  • Coauthor, Processing of Soot in an Urban Environment: Case Study From the Mexico City Metropolitan Area, Atmospheric Chemistry & Physics 5, 3033-3043, 2005.
  • Coauthor, Hydrophilic Properties of Aged Soot, Geophysics Research Letters, 32 L01807, doi:10.1029/2004GL021496, 2005.

Organizations

  • American Intellectual Property Law Association (AIPLA), Member
  • American Chemical Society (ACS), Member
  • American Association for the Advancement of Science (AAAS), Member

Speaking Engagements